Trademark stepping is just fine for Adwords

USING SOMEONE ELSE'S TRADEMARK in a Google Adwords campaign has the backing of European regulators.

The European Court of Justice clarified the scope of trademark protection in Europe, explaining that it is fine for a firm to use a rival's keywords, in this case Marks and Spencer and the Interflora brand, as long as it was not used in such a way as to damage it.

M&S used Google's Adwords in its advertising and selected keywords related to the rival flower delivery firm Interflora Flowers, including 'Interflora Delivery', 'Interflora.com', 'Interflora.co.uk' and others, meaning that when Google users looked for that company they were rewarded with adverts for the high street retailing giant.

Although it had some reservations, the court said that trademarks are important to organisations and are a key part of their brands and customer loyalty. It is possible that this could be lost if any adverts that correspond to searches for those terms bring up services from a rival firm.

However, it did not believe that adverts, even when they come from third parties, are particularly damaging.

"However, use of a sign identical to another person's trade mark in a referencing service such as 'AdWords' does not adversely affect the advertising function of the trade mark," it wrote.

Other arguments, that a rival's advert could have an adverse effect on a brand and limit its ability to attract new customers, were dismissed by the court.

"It cannot be accepted that the proprietor of a trade mark may prevent such use by a competitor if the only consequence of that use is to oblige the proprietor of the trade mark to adapt its efforts to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty," it said.

"Similarly, the trade mark proprietor cannot rely on the fact that such use may prompt some consumers to switch from goods or services bearing that trade mark." µ